092429—0113[8002~108]

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

Mark: ELIMINATOR

Serial No.: 77631615

Filing Date: December 11, 2008

Applicant: Air Flow Research Heads, Inc.

Examiner: Kevon L. Chisolm

RESPONSE TO OFFICE ACTION

Dear Examiner Chisolm:

This communication responds to the Of?ce Action mailed March 16, 2009 concerning

the above—referenced application.

AMENDMENT

1. Identi?cation of Goods/Services

Please delete the originally~?1ed identi?cation of goods/services and substitute therefor

the following:

International Class 7: Cylinder heads for engines.

REMARKS

Likelihood of Confusion

There is no likelihood of confusion between applicant’s mark and the marks cited against

it (Regs. No. 3143280 and 2924198). The PTO uses the 13 factors listed in In re E]. Du Pant de

Nemours & Ca, 476 F.2d 1357 (C.C.P.A. 1973) when determining Whether there is a likelihood

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of confusion between a pending registration and a registered mark under the Lanham Act §2(d).

The examiner cited the following factors as “the most relevant: similarity of the marks, similarity

of the goods and/or services, and similarity of the trade channels of the goods and/or services.”

‘Other factors that should also be considered are the sophistication of the consumers purchasing

these products and the concurrent use of the two ELIMINATOR marks without evidence of

confusion.

Channels of Trade

In the of?ce action, the examiner did not explain how the trade channels of the two

products at issue weigh in favor of a likelihood of confusion. The trade channels of the two

products are in fact very different. The belts sold by Gates are distributed by industrial supply

companies, like Motion Industries. See Exhibit 1, attached. Motion Industries’ website at

http://www.motionindustries.com describes the company as “one of North America’s leading

distributors of industrial maintenance, repair and operation replacement parts…distribut[ing]

bearings, power transmission products, electrical and industrial automation, hydraulic and

industrial hose, hydraulic and pneumatic products, industrial supply products, and material

handling.” The cylinder heads sold by Air Flow are only sold by high-powered auto racing

stores, not at Pep Boys or other large automotive—parts chains, and certainly not at industrial—

supply companies. See Exhibit 2, attached. Under the existing case law, these two channels of

trade are undoubtedly distinct and separate. See, 9. g. M2 Software, Inc. v. M2 Communications,

Inc, 450 F.3d 1378 (Fed. Cir. 2006) (holding that multimedia applications sold to the

entertainment and music industries traveled in a distinct channel from multimedia CD—ROMs

LACAw21 33592.1
sold to clients in pharmaceutical and medical industries); see also Electronic Design & Sales,

Inc v. Electronic Data Systems Corp, 954 F.2d 713 (Fed. Cir. 1992) (holding that providing

computer services and providing power supplies and battery chargers were distinct channels of

trade, even though sometimes both products were sold to the same corporation, since different

depaitments and people at the corporations would purchase the two products). In this instance,

the products at issue are not sold by the same type of retailers, and they would de?nitely be

purchased by different individuals for very different purposes: one for high-powered auto racing,

and the other for operating devices such as of?ce equipment, machine toolers, printing presses,

home appliances, packaging machines,“ mining equipment, textile or woodworking machinery,

and vending machines.

Different price ranges of two products have also been found in many cases to be an

imponant factor in showing that the channels of trade are different. See, e.g. Blazon, Inc. v.

Blazon Mobile Homes Corp, 416 F.2d 598 (’71h Cir. 1969) (holding that children’s toys retailing

for less than $1 and campers retailing for $970-$2600 were unrelated); Field Enterprises

Educational Corp. v. Grosset & Dunlap, Inc., 256 F.Supp. 382 (S.D.N.Y. 1966) (books selling

for $1 and books selling for $129 were unrelated); In re 0y Willi. Schauman Ab, 189 U.S.P.Q.

245 (T.T.A.B. 1975) (low-priced canoes and high-priced yachts both branded SWAN were

unrelated). The products distributed by The Gates Corporation are “power transmission belts for

machines, motors and engines used in industrial applications; and timing belts for machines,

motors and engines used in industrial applications.” These belts retail for less than $100 apiece,

and are interchangeable with belts from several other companies. In other words, these are not

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custom products; the belts are sold “off the rack” in various sizes matching up to the sizes of

their competitors. On the other hand, the cylinder heads distributed by Air Flow are not an off-

the—rack product. Cylinder heads are speci?c to each type of automotive engine. Air Flow has

taken these standard heads and improved them over years of experimentation and advances in

cylinder head technology. These parts sell for $1500-$3000.

Similarity of Goods or Services

In addition to being distributed through vastly different channels, the goods themselves

are not remotely related. The examiner contends that the “goods of the parties are closely

related: both include engine parts, which can be used and/or sold together.” However, the Gates

belts are geared toward “industrial applications,” which are primarily machines used on farms, in

mines, and in factories, including textile and wood products as well as paper, printing, and food

processing. The belts are not the same belts used in automotive engines, and in fact are not an

automotive product at all, as can be seen in both The Gates Corporation’s brochure for the

ELIMINATOR belts, and by searching the automotive section of their catalog for the term

ELIMINATOR. See Exhibits 3 and 4, attached. While The Gates Corporation does distribute

automotive belts, none of these belts are distributed under the ELIMINATOR mark.

The belts distributed by Gates are generally replaced as they wear out, and are used to

replace worn or faulty belts in industrial machines. Air Flow’s cylinder heads are highly

engineered and ?nely machined high-performance parts, and they are used to increase the

performance of one’s vehicle, rather than to replace a faulty part. See Exhibit 5, attached. The

cylinder heads distributed by Air Flow are specialty parts, created primarily for individuals who

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want to race their cars or have race—quality cars. These are solely high—performance automotive

parts, and thus are not closely related to the parts for vending machines or packaging machinery

or other industrial equipment sold by Gates. Consumers searching for either of these products

are in the market for very different things, and these products would in no way be “used and/or

sold together.”

While the marks are the same, many cases have held identical marks to be not confusing

on noncompetitive goods, even for goods that, at ?rst glance, might seem to be related. See, e. g.

Allstate Ins. Co. v. Allstate Inv. Corp, 210 F. Supp. 25 (W.D.La. 1962) (ALLSTATE insurance

and ALLSTATE mortgage brokerage not confusingly similar); J. C. Penney Co. v. Arctic

Enterprises, Inc, 375 F.Supp. 913 (D.Minn. 1974) (EL TIGRE tires and EL TIGRE

snowmobiles not confusingly similar); Kiekhaefer Corp. v. Willys—Overland Motors, Inc, 236

F.2d 423 (C.C.P.A. 1956) (HURRICANE outboard motors and HURRICANE auto engines not

confusingly similar); Savin Corp. v. Savin Group, 68 U.S.P.Q.2d 1893 (S.D.N.Y. 2003), af?rmed

by 391 F.3d 439 (2d Cir. 2004) (SAVIN of?ce equipment and SAVIN engineering services not

confusingly similar).

Sophistication of Consumers

Consumers of Air Flow’s products and Gates’ products are very sophisticated consumers

in their ?elds. Gatcs’ customers are primarily owners and operators of factories, who have

knowledge of the machinery their plant is using. Air Flow’s customers are individuals who are

well—versed in automotive parts and who pursue high—performance vehicles as a hobby or career,

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092429—01 13 [8002—108]

evidence of any instances of confusion between Air Flow’s ELIMINATOR mark for high—

performance cylinder heads and The Gates Corporation’s ELIMINATOR mark for industrial

belts.

In light of the above, Applicant believes that it has rCSponded to all issues raised in the

Office Action and respectfully requests that the instant application be passed to publication.

However, should any questions arise with respect to the application or the issues addressed

herein, please contact attorneys for Applicant.

Respectfully submitted,
?
: g X

Date: 3″; jg (2%; 5225,,rr r J z i 2 a
5 i M. John Carson K
FOLEY & LARD ER LLP
555 S. Flower St., Suite 3500
Los Angeles, CA 90071—241 l
(213) 972-4500

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